Ex Parte Lopez

Board of Patent Appeals and Interferences

Dec 2, 2010

11542972 (B.P.A.I. Dec. 2, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/542,972 10/04/2006 Davin E. Lopez 1000-1601 4155
64064 7590 12/02/2010
ORTIZ & LOPEZ, PLLC
P.O. BOX 4484
ALBUQUERQUE, NM 87196-4484
EXAMINER
ISLAM, SYED A
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
12/02/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVIN E. LOPEZ
____________________

Appeal 2009-007339
Application 11/542,972
Technology Center 3600
____________________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 11/542,972

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STATEMENT OF THE CASE
Davin E. Lopez (Appellant) seeks our review under 35 U.S.C. § 134
of the rejection of claims 1 and 3-21. Claim 2 has been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s claimed invention pertains to a portable, pop-up trade
show display apparatus. Spec. 1, para. [0002]; id. at 4, para. [0012]. Claim
1, reproduced below, is representative of the subject matter on appeal.
1. A portable display apparatus, comprising:
a flexible frame; and
a tensioned fabric having a perimeter hem, such that said
tensioned fabric is maintained by said flexible frame and
integrated with said perimeter hem in order for said tensioned
fabric to expand with said flexible frame to produce a display
area and reduce with said flexible frame for ease of transport,
wherein said flexible frame and said tensioned fabric provide a
portable display apparatus for use in a trade show, wherein said
portable display apparatus is collapsible and self-supporting.

THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 1, 4-8, 12, 14, 15, and 19 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Zheng (US 5,975,101, issued Nov. 2, 1999,
hereinafter “Zheng ‘101”) 2;

2 Appellant identifies claim 3 as subject to the rejection based on
anticipation by Zheng ‘101. App. Br. 7. The Examiner, however, does not
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2. Claims 9 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zheng ‘101; and
3. Claims 3, 10, 11, 16-18, 20, and 21 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Zheng ‘101 and Zheng (US
6,714,407 B2, issued Mar. 30, 2004, hereinafter “Zheng ‘407”).

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer (Ans.
3-11) and Final Office Action (Final Rej. mailed Oct. 18, 2007, at 2-6),
except, for the reasons discussed below, the findings regarding a
“concealable slit” and “substantially non-stretchable” fabric.

ANALYSIS
Anticipation – Zheng ‘101
Appellant’s claimed invention is an apparatus comprising a flexible
frame and a tensioned fabric having a perimeter hem. E.g., claim 1. The
independent claims 1, 12, and 14 recite, using similar phraseology, that the
frame and tensioned fabric provide a display apparatus or display area for
use in a trade show. The Examiner found that the collapsible device
disclosed in Zheng ‘101, specifically the vehicle sunscreen embodiment
shown in Figures 1-3, anticipates the structure defined by Appellant’s
claims. Ans. 3-4.
include claim 3 in that rejection (Ans. 3-5), and further finds that Zheng ‘101
does not disclose a concealable slit (id. at 6), which is a feature recited in
claim 3. Accordingly, we do not consider claim 3 to be rejected as
anticipated.
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Most of Appellant’s allegations of error in the anticipation rejection
are premised on the assertion that “[t]here is simply not a teaching of trade
shows and trade show displays in the Zheng reference.” App. Br. 20. These
arguments are directed to the intended use of the apparatus rather than any
recited structural limitation that might distinguish the claimed device from
Zheng’s apparatus. See, e.g., App. Br. 16 (arguing, in the context of claim
14: “Zheng does not teach the intended use of a trade show or trade show
display apparatus and thus Appellant’s invention IS patentably distinct from
Zheng.”) “It is well settled that the recitation of a new intended use for an
old product does not make a claim to that old product patentable. In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). While
Zheng ‘101 does not address the use of the disclosed structure as a trade
show display, the lack of disclosure related to function or intended use does
not show error in the Examiner’s finding of anticipation. See id.
The Examiner reasonably found that Zheng’s device is capable of use
as a trade show display at a trade show. Ans. 4, 9; see also id. at 10 (“[T]he
tensioned fabric of Zheng can be used to produce a display area where a
display can be attached.”) Appellant argues that Zheng’s sunshade is
awkward, cumbersome, and unstable and therefore “could not effectively be
utilized as a trade show display in the context of a trade show ….” App. Br.
21 (emphasis added); see id. at 13, 16-17 (apparently misinterpreting figures
of Zheng ‘101, e.g., figure 1A, as disclosing that the normal sunshade
framework configuration is a perpendicular arrangement rather than the
substantially planar, completely-open configuration shown in figure 1B, see
Zheng ‘101, col. 5, ll. 1-9). Appellant’s arguments suggest that the Zheng
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device might not be an optimum tradeshow display apparatus, but do not
persuade us that it is incapable of functioning as such.
In the Reply Brief, under the sub-heading concerning the claims
subject to the anticipation rejection, Appellant argues:
Furthermore, Examiner fails to show how the skilled would be
motivated to arrive at a trade show display using the Zheng
references. Unfortunately, Examiner can only have engaged in
and utilized impermissible hindsight to reach the conclusion
leading to rejection of Applicant's claims.
Reply Br. 3. Motivation and hindsight address concerns regarding
obviousness determinations rather than anticipation. Appellant’s arguments
regarding motivation and hindsight do not demonstrate that the Examiner’s
rejection based on anticipation is incorrect.
Claim 4 calls for the tensioned fabric to be comprised of
“substantially non-stretchable, flexible fabric material.” Appellant argues
that Zheng ‘101 discloses flexible fabrics but not a fabric that is both
substantially non-stretchable and flexible. App. Br. 19. In response, the
Examiner maintains that “[t]he term substantially non-stretchable can be any
fabric from little stretchable to completely stretchable.” Ans. 10. As
“substantially non-stretchable” is near the opposite end of the spectrum from
completely stretchable, we conclude that the Examiner’s construction is
unreasonably broad. The Examiner does not make a finding that Zheng
discloses a “substantially non-stretchable … fabric” under a proper
construction, and therefore we cannot sustain the rejection of claim 4, or of
claim 5 which depends from claim 4, as anticipated by Zheng ‘101. Claims
12 and 15 also recite a substantially non-stretchable, flexible fabric, and
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claim 19 requires the same by virtue of its dependence from claim 15. As
such, we also cannot sustain the rejection of claims 12, 15, and 19.
As to Appellant’s other arguments regarding the remaining claims
subject to the anticipation rejection, we consider the Examiner’s analysis
presented with respect to these claims to sufficiently demonstrate that
Appellant has not shown error in the Examiner’s rejection. See Ans. 3-5, 9-
10. We affirm the rejection of claims 1, 6-8, and 14 as anticipated by Zheng
‘101.

Obviousness – Zheng ‘101
Claim 9 depends directly from claim 1 and recites that the “tensioned
fabric is screen-printable for screen printing display information.”
Appellant’s argument for patentability, as summarized in the Reply Brief, is
that “the Examiner has not explained why one skilled in the art would be
motivated to screen print the sunshield/sunshade structures of Zheng for use
in a trade show display and trade show environment.” Reply Br. 5-6.
Appellant also argues that there is no teaching, suggestion, or motivation to
modify Zheng’s device to arrive at a trade show display. See App. Br. 22-
24.
Appellant’s contentions (App. Br. 22-24; Reply Br. 5-6) do not
persuade us that the Examiner erred in concluding that it would have been
obvious to one of ordinary skill in the art to make Zheng’s fabric screen-
printable (see Ans. 6). As an initial matter, we note that claim 9 merely
requires a screen-printable fabric, i.e., a fabric suitable for screen printing,
but does not require any actual printing – trade show related or otherwise.
Additionally, the Supreme Court has rejected the rigid requirement of a
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teaching, suggestion or motivation to combine known elements in order to
show obviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418-19
(2007). The Court noted that an obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418. The Court also
stated that “neither the particular motivation nor the avowed purpose of the
[Appellant] controls” in an obviousness analysis. Id. at 419. Thus, the
Examiner’s analysis does not, as Appellant argues, require an identification
of a motivation to modify Zheng’s sunscreen for the purpose of using it as a
trade show display.
Appellant has presented no persuasive argument or evidence as to
why there is error in the Examiner’s conclusion (Ans. 6) that one of ordinary
skill in the art would have found it obvious to use screen-printable fabric as
the fabric in Zheng’s apparatus. See KSR Int’l Co., 550 U.S. at 416
(“[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”) The
rejection of claim 9 as unpatentable over Zheng ‘101 is affirmed.
Claim 13 depends from claim 12 and therefore requires a substantially
non-stretchable, flexible fabric material. As discussed above, the Examiner
has applied an overly broad construction for this feature. Accordingly, we
cannot sustain the rejection of claim 13.

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Obviousness – Zheng ‘101 and Zheng ‘407
Claims 3 and 16
Claim 3 recites a “concealable slit” formed from the tensioned fabric.
Appellant challenges the Examiner’s finding that opening 90 of Zheng ‘407
is a concealable slit. App. Br. 25 (underlining the word “concealable”); Ans.
6 (citing Zheng ‘407, col. 6, l. 6; fig. 4); see also Reply Br. 6. In response,
the Examiner does not adequately explain how Zheng’s opening constitutes
Appellant’s recited concealable slit and does not mention the “concealable”
aspect in the reiteration of the finding regarding Zheng’s reference number
90. Ans. 11. We cannot sustain the rejection of claim 3 as unpatentable
over Zheng ‘101 and Zheng ‘407.
Claim 16 recites a “slit adapted for enabling hardware to be passed
through the fabric” but does not require that the slit be concealable.
Appellant argues that “[a] simple inspection” of Figure 4 of Zheng ‘407 does
not reveal a slit. Reply Br. 6. However, even if the opening specifically
depicted in that figure is not a “slit,” we cannot conclude that one of
ordinary skill in the art would understand Zheng’s disclosure of an opening
through which a wire may pass (Zheng ‘407, col. 6, ll. 5-6) to be limited to
solely the configuration shown in the figure. See In re Lemelson, 397 F.2d
1006, 1008 (CCPA 1968) (quoting In re Boe, 355 F.2d 961, 965 (CCPA
1966) (“All of the disclosures in a reference must be evaluated for what they
fairly teach one of ordinary skill in the art.”) As such, we are not persuaded
that the Examiner erred in finding that Zheng ‘407 discloses a slit. We
affirm the rejection of claim 16 as obvious in light of the two Zheng
references.
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Claim 10
Claim 10 depends from claim 1 and recites “wherein said display area
displays advertising media.” For this feature, the Examiner points to the
teaching of Zheng ‘407 of a video monitor or screen 58 attached to the side
of a collapsible structure. Ans. 7; Zheng ‘407, figs. 4-5. We do not find
persuasive Appellant’s argument (App. Br. 27; Reply Br. 6) that the screen
itself is not advertising media. Claim 10 recites an intended use for the
display area and does not require structure in the form of advertising media.
However, even if the recitation is a structural limitation, the Examiner
correctly found that the screen can display product information and therefore
“can be used as advertising media.” Ans. 11; see also Zheng ‘407, col. 7, ll.
25-31 (the structure can be a computing booth for, inter alia, surfing the
internet). Thus, we agree with the Examiner’s conclusion that the combined
teachings of the two Zheng references renders obvious the subject matter of
claim 10, and affirm the rejection of that claim.
Claims 11 and 17
Claim 11 recites that a plurality of pockets are formed on a side of the
tensioned fabric for maintaining magnets which attach to metallic objects for
attachment to display media. Claim 17 recites a pocket adapted for
receiving and holding magnets, literature, or display material. Appellant
does not dispute the Examiner’s finding that Zheng ‘407 discloses pockets
and that the pockets are capable of maintaining magnets. Ans. 7, 11; App.
Br. 27-28; Reply Br. 6. Rather, Appellant argues that the references do not
teach the “intended use of the plurality of pockets” concerning the magnets.
Reply Br. 6. This argument does not show error in the rejection. Claims 11
and 17 only recite the structure of pocket(s), with the remaining claim
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language either describing an intended use or the function of the pocket(s)
which do not serve to structurally distinguish the claimed pockets from those
of Zheng ‘407. See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir.
1997) (While features of an apparatus may be recited either structurally or
functionally, claims directed to an apparatus must be distinguished from the
prior art in terms of structure rather than function.) The rejection of claims
11 and 17 is affirmed.
Claim 18
Claim 18 depends from independent claim 14 and recites a
supplementary support system. In addressing this feature, the Examiner
concluded that it would have been obvious to use the loops 320 of Zheng
‘407 (see col. 9, l. 6; fig. 9B) for hanging the device on the wall. Ans. 8.
Appellant’s argument that “Appellant’s invention is not hung on a wall but
instead displayed upright in a trade show environment” (App. Br. 28) does
not show error in the Examiner’s conclusion. To the extent that Appellant
contends that the invention is free standing on the floor, this argument is not
commensurate with the language of claim 18 or of claim 14 incorporated
therein. Claim 18 does not limit how the apparatus is supported. The
obviousness rejection of claim 18 is affirmed.
Claim 20
Appellant admits in the Specification that “‘Velcro’ is essentially a
brand name of fabric hook-and-loop fasteners used for connecting objects.”
Spec. 8, para. [0039]. Nonetheless, Appellant now argues that Zheng ‘407
“indicates the use of Velcro pads 328, not a fabric hook-and-loop fastener
material.” App. Br. 29. We agree with the Examiner’s finding that Velcro
pads are a form of hook and loop fasteners. Ans. 11. Furthermore,
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Appellant appears to have withdrawn this argument in the Reply Brief. See
Reply Br. 6 (asserting that the use of Velcro pads and hook and loop
fasteners is “irrelevant” in light of the references’ lack of a trade show
teaching). The rejection of claim 20 is affirmed.
Claim 21
Appellant appears to reiterate the argument that, to render obvious the
claimed subject matter, one or both of the references must provide a teaching
or suggestion to utilize screen-printable fabric for use at a trade show. See
App. Br. 30-31. For the reasons discussed above regarding claim 9, we are
not persuaded by Appellant’s arguments.
To the extent that Appellant’s passing reference to the Examiner’s
finding of a slit constitutes an argument (see App. Br. 30), we do not find
this argument persuasive for the reasons given above concerning claim 16.

Appellant’s remaining arguments
At the end of the argument section of the Appeal Brief, at pages 31-
33, Appellant makes several general arguments directed to some and/or all
of the rejected claims, and which may be a summary of Appellant’s
contentions. While we have considered these arguments, we do not find
them persuasive of error in any of the rejections on appeal (except, of
course, for any reiterated argument pertaining to a claim for which we have
reversed the rejection).

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DECISION
The decision of the Examiner to reject claims 3-5, 12, 13, 15, and 19
is reversed. The decision of the Examiner to reject claims 1, 6-11, 14, 16-
18, 20, and 21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

JRG

ORTIZ & LOPEZ, PLLC
P.O. BOX 4484
ALBUQUERQUE, NM 87196-4484
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